From Hart Publishing, Oxford I received an announcement: ‘Patent Enforcement Worldwide’ edited by Christopher Heath, now in its 3rd edition.

This book features 15 country reports on the patent enforcement practice of the world’s most litigated countries in Europe, Asia and the Americas. Litigation strategies for both right owners and alleged infringers are explained against the background of case law on: types of action, standing to sue, jurisdiction, obtaining evidence, provisional and final measures, trial practice, types of infringement, remedies and counterclaims, costs and issues of retrial, threats and wrongful enforcement. Special chapters cover the Trade-Related Aspects of Intellectual Property Agreement provisions on enforcement, enforcement issues in the European Community, international cross-border litigation and border measures.

The reports are written by patent practitioners or academic experts in the field, and the homogenous structure of the country reports allows for an easy identification of best practices and strategic considerations on the choice of jurisdiction

Looking at the table of contents one can see that not only the most common European jurisdiction are covered in the book e.g. UK, Germany, France, and Italy but also it covers some of the BRICS such as Brazil, China, and India. In relation to the Latin American's jurisdictions Brazil and Argentina are the only two that are covered in the book at chapter 17 and 18 respectively.

The book can be purchased online (here) and it is available in electronic format as well as hardcopies.

Thanks Anni Mirza, marketing and editorial assistance for the information.

The 7th Civil Court of Rio de Janeiro decided on 28 September 2015 in TECHNOGYM and TECHNOGYM EQUIPAMENTOS LTDA against ATHLETIC WAY LTDA that the commercialization of copies of original fitness equipment products occurred with clear demonstration of improper appropriation of the competitor products’ trade dress, characterizing therefore the practice of unfair competition. The Judge held the defendant practiced unfair competition as described in art. 195, III and granted injunction relief plus monetary damages on the basis of art. 209 of Law 9.279/96.

BACKGROUND
The claimant is an Italian worldwide manufacturer of fitness equipment known by its trademark TECHNOGYM, and TECHNOGYM EQUIPAMENTOS LTDA is its exclusive representative for distribution and marketing of TECHNOGYM fitness equipment in Brazil. In turn, the defendant ATHLETIC WAY LTDA is a Brazilian company that imports and sells gym equipment of different origins.

Both companies operate in the manufacturing and marketing segment of fitness equipment and the dispute is about comparable products identified by the lines SELECTION / PURESTRENGTH and SENSATION / FUTURE respectively.

TECHNOGYM claimed the practice of improper reproduction, in which, the defendant would buy equipment from China that would be identical copies of its equipment, changing only the label of the trademark, which would be glued to the logo recess of TECHNOGYM, as later confirmed by the nominated technical expert in the case.

THE CASE
In 2013, TECHNOGYM brought a civil action against ATHLETIC WAY seeking a preliminary injunction to forbid the defendant to market, sell and advertise the two lines of gym fitness equipment products – SENSATION / FUTURE, in addition to monetary damages [here in Portuguese].

In response, ATHLETIC WAY contented TECHNOGYM did not protect its products by means of industrial design or patent, and presented other allegations in order to repeal the claimant’s demands. It specifically alleged the design was in the public domain. The Judge rejected ATHLETIC WAY’s arguments. Notably, the right of the claimant “to repress unfair competition of its product is independent of any industrial design registration for the shape of its exercise equipment”, said the Judge.

In Brazil, it is not possible to register as industrial design or trademark shapes determined essentially by technical considerations, or which cannot be dissociated from its technical effect. Besides, there is no ornamental shape protection by means of industrial design. The matter that the design was in the public domain was considered irrelevant by the Judge.

The Judge, however, considered whether ATHLETIC WAY focused on the practice of illicit imitating TECHNOGYM’s products as trade dress and whether this behavior would have characterized unfair competition, to evaluate the defendant’s liability for injunction relief and damages.

And commented that:
There is no … specific provision to protect this trade dress or branding of companies. Its protection is based on the repression of unfair competition as foreseen in the Industrial Property Law. Note that this protection afforded by law is not limited to the trademark, reaching also the extrinsic characteristics of the products.
To test unfair competition, for the violation of trade-dress, it suffices the simple external comparison of the ornamental aspects of the product or the form of its presentation, taking into account the potential risk of consumer confusion.

The findings of the technical expert provided sound evidence to typify the practice of unfair competition:
The commercial strategy of the Defendant is not limited to the reproduction of visual forms of devices, but includes a series of acts that, taken together, suggest abuse of rights and unfair competition, in that: a) allow the use of the prestige and the power of attraction stemming from creative and professional effort of others; b) provide an unfair competitive advantage over competitors who bear the cost of the visual identity development; c) cause damage to the company that has its product lines copied since it dilutes the visual identity of its equipment and affects the investment in its creation and; d) empower any customer poaching for a particular kind of consumer.

On the assessment of the imitation of the designs and the characterization of unfair competition in relation to consumer confusion, the Judge referred once again to the technical expertise findings, namely to confirm the imitation of the design shapes in both products, the imitation of the distinctive visual elements in both products, the existence of a logo recess, the indication of “Italian design” displayed on the site of the defendant, and to show the conduct of the defendant’s commercial representatives at fairs, who allocated exhibition booths next to the claimant.

The defendant company did not refute the expert conclusions. However, the decision is under appeal.

The Peruvian National Institute for the Defence of
Competition and Protection of Intellectual Property (Indecopi) recently stated
actions against national and local clubs, recreation centres, karaoke, clubs
and restaurants, among others.

Indecopi through the Directorate of Copyright, brought, ex officio, actions against 36 centres due to illegally disseminating musical works. The said complaints were noted when the specialized staff from the Directorate of Copyright was making routine inspections in different locations nationwide. The staff found that some of these places did not have proper authorization to play certain music.

Public communication (diffusion) of musical works that do not have prior written authorization of the authors or collective management society representing them are prohibited. This type of infringement may be sanctioned by a fine up to 180 UIT (tax units) and a penalty of up to 8 years of prison.

Facts: The collective society in Peru is called Peruvian Association of Authors and Composers (APDAY). Copyright law follows a common IP system, through CAN Decision 486 – the Andean Community.

The news were published in the new and improved Indecopi web portal. At the end of the news, Indecopi reaffirmed its interest in promoting the protection of IP but in general it notes that “intellectual property helps to improve the competitiveness of our country” adding that IP supports “the work of creators and artists whose art serve as a means of expression of our cultural identity.”